09-02-2012 (Newsletter Issue 13/12)
Examination of Applications Remain the Same
The Intellectual Property Office of the Philippines (IPOPHL) has announced that there will be no difference in the substantive examination of applications received by way of Madrid Protocol or by way of national application. In other words, the applications will be examined in the chronology by which they are received and no preference will be given to one type of application over the other.
Moreover, international registrations extending to the Philippines will also be subject to the requirements of a Declaration of Actual Use (DAU). The DAU and the corresponding fees have to be filed with IPOPHL through a resident agent.
Source: patrick mirandah co, Philippines
07-31-2012 (Newsletter Issue 12/12)
Accession to the Madrid Protocol Now Effective
The Madrid Protocol has become effective in the Philippines on 25 July 2012. It is now possible to file for international registration of trademarks.
05-29-2012 (Newsletter Issue 9/12)
Accession to the Madrid Protocol
Philippine trademark holders and applicants can now file more easily trademark applications in more than 80 countries after President Benigno Aquino III signed the Instrument of Accession of the Philippines to the Madrid Protocol on 25 April 2012. Madrid Protocol operations in IPOPHL will commence on 25 July 2012.
Currently, a Philippine trademark holder seeking protection abroad has to apply separately in every country of interest. This involves different application forms, languages and payments in different currencies.
The Madrid Protocol will provide a cost-effect, centralized procedure that will allow a trademark owner to obtain protection for its mark in different countries by filing one international application in the Intellectual Property Office of the Philippines (“IPOPHL”).
Source: Bengzon Negre Untalan Intellectual Property Attorneys, Philippines
RA 8293 entitled “Intellectual Property Code of the Philippines” was enacted on January 1st, 1998 and codifies the Philippine Laws on IP conformably with the WTO-TRIPS Agreement. It created the Intellectual Property Office (IPO) and repealed old IP and IP-related laws, insofar as the same are inconsistent with RA 8293, as for example RA 166 of June 29th, 1947.
The Philippines adhered to the Madrid Protocol effective July 22, 2012.
Trademark protection is obtained either by registration or local use prior to January 1st, 1998. Under RA 166, the trademark law in force before RA 8293, registration was merely a right or prerogative of the trademark owner, and was not a prerequisite to the enjoyment of rights. The passage of RA 8293 did not impair trademark rights arising from local use under RA 166.
Nice classification, 10th edition
Registrable as a trademark is any visible sign capable of distinguishing a good (trademarks) or service (service marks of an enterprise) and shall include a stamped or marked container of goods. Registrable marks are considered to be words, names, letters, numerals or devices. A mark cannot be registered if it for example consists of colour alone, unless defined by a given form or if it consists of shapes that may be necessitated by technical factors or by the nature of a good itself or factors that affect their intrinsic value, such as generic or descriptive marks Likewise unregistrable are marks that are misleading, contrary to public order or morality, or identical or confusingly similar with a mark that has been registered or with an earlier or priority filing date.
The following trademark types are registrable: trade marks, service marks, collective marks, trade names, and even domain names.
The application is filed at the Bureau of Trademarks at the IPO.
Multiple-class applications are possible.
If a foreign applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he must designate by a written document filed in the IPO, the name and address of a Philippine resident who may receive notices in proceedings affecting the mark.
A non-legalised power of attorney is sufficient.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 4 to 12 months.
Prior to registration, the trademark application is published in the weekly official electronic gazette published on the website of the Philippine Intellectual property Office for opposition purposes.
Upon certification by the Director of the Bureau of Legal Affairs that no verified notice of opposition, or motion for extension of time to file the same, has been filed within the opposition period, and upon payment of the required fee, the office shall issue the certificate of registration. The issuance of the certificate of registration shall be published in the IPO gazette and shall be entered on the records of the office.
The opposition period is 30 days from publication date of the application. The period may be extended for two (2) additional thirty (30) day periods, upon motion due to meritorious grounds and payment of the appropriate fees.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
30 days from the date of publication in the IPOPHL’s e-Gazette. The period may be extended for two (2) additional thirty (30) day periods.
A trademark registration is valid for 10 years from the date of registration.
The registration is renewable for periods of 10 years.
Within 3 years from filing of the trademark application, a declaration and evidence of actual use (DAU) of the mark in Philippine commerce shall be filed, otherwise the trademark is cancelled automatically.
The Guidelines on the Submission of Declaration of Actual Use require the DAU to be submitted without need of notice, in the prescribed format, signed and notarized, together with proofs of actual use (e.g. labels and brochures), within the said period of time. A single extension to file the DAU for 6 months may be filed within this period of time and the actual use of the trademark may be made within the 6 months extension.
To maintain the validity of the registration, declaration and evidence of use of the mark must also be filed within one year from the fifth anniversary of the registration of the mark.
The official fee is USD 53.00 as filing fee (approx. EUR 36.00) per class. Publication and registration is another USD 64.00 (approx. EUR 44.00). Further USD 39.00 (approx. EUR 27.00) is charged for the filing of the declaration of actual use.
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|Word Mark Search (availability)
|Word Mark Search (identical)
|Extended Search (word mark, company name, domain)
|Device Mark Search (availability)
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|Company Name Search
|Domain Name Search (extended)
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We would like to thank the following law firms for their assistance in updating the information provided:
Platon Martinez Flores San Pedro & Leaño, Makati City, Philippines
CVCLAW Villaraza Cruz Marcelo & Angangco, Manila, Philippines